PTAB

IPR2020-00701

Samsung Electronics America Inc v. Uniloc 2017 LLC

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1. Case Identification

2. Patent Overview

  • Title: Anti-Theft Protection For A Radiotelephony Device
  • Brief Description: The ’654 patent discloses a method for protecting a mobile radiotelephony device against theft by linking it to a specific user identification module (e.g., a SIM card). The method involves preventing the device’s normal operation if it detects a period of inactivity, requiring a "deblocking code" to resume functionality.

3. Grounds for Unpatentability

Ground 1: Obviousness over Nokia Manual and Barvesten - Claims 10-20 are obvious over the Nokia Manual in view of Barvesten.

  • Prior Art Relied Upon: Nokia 9000i Owner’s Manual ("Nokia Manual") and Barvesten (Patent 5,940,773).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the Nokia Manual, which describes the Nokia 9000i Communicator, discloses most limitations of independent claim 10. The Nokia Manual teaches a mobile device that uses a SIM card for security and includes an "Autolock" feature that locks the device after a "defined inactivity period." It also describes a "SIM change security" feature that locks the communicator if an unrecognized SIM card is inserted. Petitioner asserted that Barvesten supplies the specific method for "linking" the device to the SIM card, a detail not explicit in the Nokia Manual. Barvesten teaches storing a SIM card's unique identifier (IMSI code) in the mobile device's memory and comparing that stored code to the code of any inserted SIM card to verify it is an authorized module.
    • Motivation to Combine: Petitioner contended a POSITA would combine these references to enhance device security, which is the stated goal of both. A POSITA would have recognized that incorporating Barvesten’s robust method for verifying a linked SIM card into the Nokia device would improve upon Nokia's existing "SIM change security" feature. The combination would create a more secure device by combining a strong verification method with a user-friendly inactivity lock.
    • Expectation of Success: The integration of these known security technologies was argued to be straightforward and predictable, requiring only ordinary skill.
    • Key Aspects: Petitioner argued that dependent claims 11-16 and computer-readable media claims 17-20 were also rendered obvious by this combination, as their additional limitations (e.g., using a deblocking code, preventing outgoing calls, storing the IMSI) were expressly taught or made obvious by the combined teachings of the Nokia Manual and Barvesten.

Ground 2: Obviousness over Barvesten and Schultz - Claims 10-20 are obvious over Barvesten in view of Schultz.

  • Prior Art Relied Upon: Barvesten (Patent 5,940,773) and Schultz (a 1996 publication titled "Communication Device Inactivity Password Lock").
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted this combination also renders the claims obvious. Barvesten was argued to provide the foundational system for protecting a mobile device by "linking" it to a specific user identification module. It discloses storing an IMSI code from a SIM card onto the device and performing a verification check upon activation, thereby meeting the "verifying a...linked...module" limitation of claim 10. Schultz was argued to explicitly teach the missing "inactivity" element. Schultz describes an improvement over existing manual password locks, proposing that a device should automatically "become locked after it is inactive for a preprogrammed period of time," which directly teaches detecting a period of inactivity to prevent normal operation.
    • Motivation to Combine: A POSITA seeking to improve the security of the system in Barvesten would have been motivated to add the automatic inactivity lock taught by Schultz. This addition would address the common security vulnerability of a user misplacing an unlocked device or forgetting to manually lock it. The teachings were seen as complementary and aimed at the same technical problem.
    • Expectation of Success: Combining a known SIM-linking security feature with a known inactivity-based locking feature would have been a predictable and logical design choice for a POSITA.
    • Key Aspects: This ground provides an alternative combination where the primary reference establishes the core SIM-linking security, and the secondary reference adds the specific functionality of an automatic lock based on user inactivity.

4. Key Claim Construction Positions

  • Petitioner contended that the terms “deblocking code” (recited in claims 11, 18, 19) and “debugging code” (recited in claim 15) should be construed as interchangeable based on the specification and prosecution history. Both terms should be interpreted to mean "a string of characters, such as a PIN code, that can be entered to return a device to normal operation." This construction is central to the obviousness arguments for the dependent claims involving these terms.

5. Arguments Regarding Discretionary Denial

  • Petitioner presented two main arguments for why the Board should not exercise its discretion to deny institution.
  • Against §325(d) Denial: Petitioner argued that although Barvesten and Schultz were listed on an Information Disclosure Statement (IDS) during prosecution, there was no evidence the Examiner substantively considered their specific teachings related to inactivity timers or IMSI-based linking. Therefore, the petition raised new arguments not previously before the Office.
  • Against General Plastic Denial: This petition was filed concurrently with a motion for joinder to an already-instituted IPR (IPR2019-01471, filed by Microsoft). Petitioner argued that as a "me-too" or "copycat" petition seeking to join as a passive "understudy," the factors from General Plastic that weigh against follow-on petitions are neutralized, as joinder would not place a significant additional burden on the Board or the Patent Owner.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and cancellation of claims 10-20 of the ’654 patent as unpatentable under 35 U.S.C. §103.